🚫 Article 5(1)(f) SMK – Deceptive Trademarks: Public Deception as an Absolute Ground for Refusal
Legal Text:
“Signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, shall not be registered as a trademark.”
📌 What Does This Mean?
Trademarks exist to indicate true commercial origin. If a mark is capable of misleading consumers about what the product is, where it comes from, or its quality, it cannot be registered.
Typical misleading elements:
Nature of goods: e.g. “SILK TOUCH” for polyester fabrics. Quality of goods: e.g. “PREMIUM GOLD” for cheap low-grade coffee. Geographical origin: e.g. “Swiss Made” for watches manufactured in Turkey.
⚖️ Opposition and Refusal in Turkey
Ex Officio Refusal: TÜRKPATENT examines deceptive marks at the examination stage and refuses them without needing a third-party objection. Opposition by Third Parties (SMK Art. 18): Competitors, associations, chambers of commerce, or consumer protection groups may file an opposition within 2 months of publication in the Trademark Bulletin if they believe the mark deceives the public. Judicial Review: If the opposition or refusal is rejected, applicants or opponents can file an appeal to the Re-examination and Evaluation Board (YİDK), and later to the Ankara IP Courts.
🛠 How to Overcome a Refusal?
Amend Description: Remove misleading terms (e.g. delete “Swiss Made” from the mark or description). Disclaimers: In some cases, providing a disclaimer may help, but if the deception is intrinsic to the mark, it will not succeed. Evidence of Truth: If the mark looks deceptive but the claim is factually correct (e.g. your tea really comes from Rize), you can submit evidence to prove it.
❓ Frequently Asked Questions
Q1: Can I register “Organic Farm” if my products are not certified organic?
👉 No, this would mislead the public about quality and certification.
Q2: What if I import Italian cheese and sell it in Turkey under “Made in Italy”?
👉 Allowed only if you can prove genuine Italian origin with certificates.
Q3: Can a deceptive element be “reclaimed” by use?
👉 Unlike lack of distinctiveness, deception cannot be cured by use. Even decades of use won’t validate a deceptive trademark.
Q4: Who can oppose such a mark in Turkey?
👉 Any third party with a legitimate interest (competitors, chambers, associations, consumer groups).
📑 Key Takeaways
Deceptive marks are an absolute bar to registration. They harm consumer trust and fair competition. Oppositions in Turkey must be filed within 2 months from publication. Proof of true origin or quality is crucial if challenged.
📩 Need Legal Assistance?
If you are facing a deceptive trademark refusal or planning to oppose a competitor’s deceptive mark:
📧 emre@emrekurt.av.tr
📱 WhatsApp: +90 551 942 20 34
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